JNC CORPORATION et al.

Patent Trials and Appeals Board

Sep 1, 2021

2020004526 (P.T.A.B. Sep. 1, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/222,964 07/29/2016 KAZUYUKI SAKAMOTO 38866-US-033-PCT-1 8297
31561 7590 09/01/2021
JCIPRNET
8F-1, No. 100, Roosevelt Rd. Sec. 2,
Taipei, 100404
TAIWAN
EXAMINER
MCCULLOUGH, ERIC J.
ART UNIT PAPER NUMBER
1773
NOTIFICATION DATE DELIVERY MODE
09/01/2021 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
Belinda@JCIPGROUP.COM
USA@JCIPGROUP.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KAZUYUKI SAKAMOTO, OSAMU KOJIMA, and
OSAMU YAMAGUCHI
Appeal 2020-004526
Application 15/222,964
Technology Center 1700
Before LINDA M. GAUDETTE, N. WHITNEY WILSON, and
LILAN REN, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s May 2, 2019 decision to finally reject claim 1 (“Final Act.”). We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word Appellant to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real parties in interest as
Kazuyuki Sakamoto (the first named inventor), and JNC Corporation and
JNC Petrochemical Corporation (the assignees of record) (Appeal Br. 1).
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CLAIMED SUBJECT MATTER
Appellant’s disclosure is directed to a method for manufacturing a
composite porous film for fluid separation (Abstract). A coating film of a
silica precursor is formed on at least one side of a microporous film (id.).
The film is then subjected to either heat or steam treatment to convert the
silica precursor into SiO2 glass (id.). Claim 1, the only claim on appeal, is
reproduced below from the Claims Appendix:
1. A method for manufacturing a composite porous film
for fluid separation, wherein a coating film of a silica precursor
is formed at least on one side of a microporous film including a
fluoropolymer resin by coating treatment, and after removing a
solvent of the silica precursor to form the coating film, applying
at least one of treatment selected from heat treatment and steam
treatment to convert the silica precursor into a SiO2 glass so that
a deposition amount of the SiO2 glass is in a range of 0.6 to 8.0
g/m2, and thus a porous SiO2 glass layer is formed at least on
one side of the microporous film, and a composite porous film
coated with the porous SiO2 glass layer is obtained, wherein a
mean pore diameter of the composite porous film for fluid
separation is in a range of 5 to 500 nanometers, and the silica
precursor is a polysilazane solution having a polysilazane
concentration in a range of 5 to 20% by mass, and includes
fillers selected from the group consisting of zinc oxide, titanium
dioxide, barium titanate, barium carbonate, barium sulfate,
zirconium oxide, zirconium silicate, alumina, magnesium
oxide, and particulates of silicon carbide, silicon nitride and
carbon.

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Haluska et al. US 5,436,083 July 25, 1995
Mitani et al. US 2004/0182242 A1 September 23, 2004
Ramaswamy et al. US 2007/0125702 A1 June 7, 2007

REJECTION
Claim 1 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Ramaswamy in view of Mitani and Haluska.
OPINION
The Examiner’s findings underlying the rejection are set forth at pages
4–8 of the Final Action. In particular the Examiner finds that Ramaswamy
discloses a method of manufacturing a composite porous film for fluid
separation where a silica layer is deposited on a microporous film of
fluoropolymer resin (Final Act. 4–5, citing Ramaswamy ¶¶ 19, 26–30, 68).
The Examiner also finds that Ramaswamy does not disclose forming the
silica layer by (1) coating a film of a silica precursor on one side of a
microporous film, and (2) after removing a solvent of the silica precursor to
form the coating film, applying at least one treatment selected from heat
treatment and steam treatment to convert the silica precursor into a SiO2
glass (Final Act. 5). The Examiner also finds that Ramaswamy does not
teach that the polysilazane solution has a polysilazane concentration in a
range of 5 to 20% by mass, and includes fillers selected from the group
consisting of zinc oxide, titanium dioxide, barium titanate, barium carbonate,
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barium sulfate, zirconium oxide, zirconium silicate, alumina, magnesium
oxide, and particulates of silicon carbide, silicon nitride, and carbon (id.).
The Examiner further finds that Mitani discloses a method for
manufacturing a membrane for fluid separation in which a coating film of a
silica precursor solution is formed at least on one side of a supporting base
by coating via immersion, and then hydrothermal treatment converts the
silica precursor into a SiO2 glass (id., citing Mitani, Abstract, ¶¶ 67, 76, 77).
The Examiner determines that it would have been obvious to use this
method to form the silica layer of Ramaswamy’s system because that would
be a simple substitution of one method known to form a silica film on a base
membrane (id. at 5–6).
Haluska is cited in the rejection for teaching that the following claim
limitations were known in the art: (1) the concentration of the polysilazane;
(2) drying the polysilazane solution before thermal treatment, and (3) using
the claimed fillers (Ans. 8). The Examiner’s rationale for combining these
teachings with those of Ramaswamy and Mitani is that doing so involves
only using a known technique of coating a silazane film to a base substrate
prior to hydrothermal treatment to form silica (Final Act. 6–7).
Appellant argues, inter alia, that a person of skill in the art would not
have combined the teachings of Haluska with those of Ramaswamy and
Mitani because Haluska discloses a protective coating which can be pore-
free, while both Ramaswamy and Mitani relate to porous, filter-like systems
(Appeal Br. 5–6). The specific passage of Haluska relied upon by Appellant
reads as follows:
The present invention is based on the discovery that desirable
protective coatings can be formed on electronic substrates from
a composition comprising a polysilazane and a filler. Coatings
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derived therefrom are thicker (eg., >40 micrometers) than those
derived from polysilazanes (eg., <2 micrometers), they can
have a variety of electrical properties depending on the filler
and they can be crack and pore-free.

(Haluska, 1:49–56, emphasis added).
The first issue for this appeal is whether Appellant has identified
reversible error in the Examiner’s rationale for combining Haluska and
Ramaswamy. Appellant argues that a person of skill in the art would not
have used Haluska’s teachings to modify Ramaswamy’s system because
Haluska teaches that its silica coating is pore-free and thus would be
incompatible with Ramaswamy’s system, which is used, in part, for
membrane structures used in filtration applications (Ramaswamy ¶ 3).
After reviewing the evidence of record, Appellant’s arguments as set
forth in the Appeal Brief and the Reply Brief, and the Examiner’s position as
set forth in the Final Action and the Answer, we determine that the evidence
of record does not support Appellant’s position and we affirm the rejection
on appeal, essentially for the reasons set forth by the Examiner. We add the
following for emphasis.
Appellant’s argument rests on a contention that Haluska teaches a
non-porous silica coating. Appellant argues that Haluska teaches pore-free
coatings because Haluska states that (a) its coating can be pore-free, and
(b) its coating is a protective coating for electronic components, which
means that Haluska intends for its coatings to be pore-free (Appeal Br. 5;
Reply Br. 2). According to Appellant, because a person of skill in the art
would have understood that even trace amounts of impurities such as water,
organic or inorganic fluids (gas or liquid), particles of any size, etc., can
result in damage to the underlying components, a person of skill in the art
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would have understood Haluska to want its coating to be pore-free (Reply
Br. 2).
However, Haluska does not require its coatings to be free of cracks
and pores – only that the coating may have such attributes. (Haluska, 1:49–
56). Moreover, Mitani discloses that thermal treatment of polysilazane
solutions produces a porous silica membrane (Mitani, ¶¶ 67, 76, and 77).
The rejection relies on Haluska as teaching one of skill in the art known
ranges of polysilazane solution concentrations used for a film formed from
thermal treatment of a polysilazane solution into a film, as well as the
inclusion of fillers (i.e., to increase thickness) and that it is known to dry
(i.e., remove solvent from) the polysilazane solution before firing. These
features are not specifically described as influencing the porosity of the
resulting membrane.
Thus, the evidence supports the Examiner’s finding that a person of
skill in the art would have had a reason to combine the cited teachings of
Haluska with those of Ramaswamy and Mitani. That Haluska might wish to
minimize the porosity of its coatings would not have prevented a person of
skill in the art from relying on some of its teachings, particularly in view of
the fact that Haluska teaches that its coating can be pore-free, not that it is
pore-free.
Moreover, to the extent that Appellant argues that data in the
Specification suggests that pore size can be affected by polysilazane
concentration (Appeal Br. 8–9), even if true and known to a person of skill
in the art at the time of the invention, that fact would not have prevented a
person of skill in the art from using the teachings of Haluska with
Ramaswamy’s system.
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Appellant also argues that Haluska’s concentration range for the
polysilazane is so broad that it cannot render obvious the claimed 5–20% by
mass concentration (Appeal Br. 9). This argument is not persuasive because,
as explained by the Examiner (Ans. 10), the claimed range is completely
encompassed by Haluska’s disclosed range (5–20% versus 1–50%), such that
a person of skill in the art could have arrived at the claimed range through
routine experimentation. “[W]here the general conditions of a claim are
disclosed in the prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation.” In re Aller, 220 F.2d 454,
456 (CCPA 1955). A prima facie case of obviousness exists in situations
where the claimed ranges overlap the ranges disclosed by the prior art. See
In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997); In re Woodruff, 919 F.2d
1575, 1578 (Fed. Cir. 1990).
Appellant also alludes to a showing of unexpected results (Appeal Br.
9–10), but the alleged showing is not sufficient to demonstrate non-
obviousness in view of the overlapping range described above. In particular,
Appellant has not shown unexpected results achieved at concentrations of
5% or 20% (for example, by comparison with concentrations of 4% or 21%),
nor is the showing commensurate with the scope of the claims (see, e.g., In
re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990)).
Finally, Appellant contends that the Examiner has not adequately
established that the prior art renders obvious the claimed silica deposition
amount (0.6 to 8.0 g/m2). The Examiner finds that the thickness of
Ramaswamy’s silica layer overlaps with the thickness of the claimed silica
layer, so that the amounts of silica would also be expected to overlap (Final
Act. 7). The Examiner also finds, in the alternative, that the silica deposition
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amount is a result effective variable such that optimizing it to the claimed
amount would have been obvious to a person of skill in the art (Final Act. 7–8).
Appellant does not challenge this latter rationale (see Appeal Br. 10–
11; Reply Br. 5–6) and, therefore, does not show reversible error in it.
Therefore, for the foregoing reasons, we affirm the rejection of claim 1.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1 103(a) Ramaswamy,
Mitani, Haluska
1

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED